Background
A Peruvian citizen has managed to register the trademark “Hylton” before INDECOPI (Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual – National Institute for the Defense of Competition and Protection of Intellectual Property) (Resolution N. 0622-2019/TPI-INDECOPI), despite the opposition expressed by the Hilton Hotel chain. The chain argued that the name could confuse the market since its own trademark was in the registration process.
The trademark registered by this Peruvian entrepreneur trades scientific and navigation instruments, among other products, which are clearly different from the services offered by Hilton. This fact was key to solving the case.
Arguments of the Case
Hilton Hotel’s Opposition
Hilton argued that the trademarks “Hylton” and “Hilton” were sufficiently similar to confuse consumers. The hotel chain indicated that it already owned the name “Hilton” in Colombia and Ecuador in classes 35 and 43 of the International Classification:
- Class 35: Advertising, management, and administration of commercial businesses.
- Class 43: Catering and temporary accommodation services.
Hilton also argued that its application for class 35 was pending in Peru when “Hylton” was registered.
Defense of “Hylton”
The Peruvian businessman argued that he already had registered the “HYLTON PROVEIND” trademark and that “Hylton” was derived from this earlier trademark. The Hilton Hotels chain argued that the prior registration of the entrepreneur had no relevance and that each new application should be evaluated independently.
Indecopi Evaluation: Case No.740947-2018/DS
First Instance
Indecopi dismissed Hilton’s opposition and confirmed the registration of “Hylton.” Although it recognized that the trademarks were graphically and phonetically similar, it decided that the difference in the goods and services offered eliminated the confusing likelihood.
Second Instance
Hilton Hotels challenged the first instance decision, arguing that the assessment was insufficient and could significantly confuse consumers regarding its mark, highlighting the possible interrelationship between the technology products and hospitality services.
Response from “Hylton”
The business owner of this mark highlighted that the “Hylton” logo included additional graphic elements that differentiated its mark from the Hilton Hotels chain. Although the manifestation of both trademarks is similar, it was not enough to modify the decision.
Final Decision
By Resolution No.0622-2019/TPI-INDECOPI, Indecopi ratifies its decision to allow “Hylton” and “Hilton” to coexist in the market, considering the insufficient similarity between the trademarks to confuse consumers. Indecopi’s decision underlines that although the similar pronunciation of “Hylton” and “Hilton” is not enough to cause significant confusion among consumers. The coexistence of both trademarks in the market is not a problem since there is no direct link or notable crossover between the goods and services of each trademark that could mislead the public.
Conclusion
This decision highlighted the importance of evaluating cases objectively to determine that similarities between trademarks are not only determined based on the terms of appearance but also in the context of their respective markets and services.
Source: Resolución 0622